Intellectual Property Strategy

Almost all of my work time is spent working for multi-billion dollar clients around the world. So why do I still bother helping small companies and startups?

Because I believe that collectively they make the greatest contribution to innovation and because every time I have a conversation with them, I get a variation on the same story. They have tried working with [name brand] firm and they feel like they have spent a great deal of money and got very little or nothing in return.

I can usually only offer a half hour call, and we usually manage to define a new world view together which sets them on a better path – one which is business focused, and strategic.

So what do we chat about in that half hour? Here is a small glimpse of some of the precepts that come up time and again:

Yes in an ideal world, you should get a top patent attorney firm to work with you from day one to draft and file a near-perfect patent / trademark / design specification. Unfortunately, the world is not perfect, and try as they might, an external advisor is never going to understand your business as well as you do. Business strategy first, IP strategy second. If you have no budget for IP protection – and you truly understand what this means, then that’s fine. If you have only a small budget for IP protection, then be clever in doing the best you can with that – that is also fine. If you have to self file a patent / trademark / design, or instruct an attorney to spend a set amount of time to review it – that’s totally fine. It’s your responsibility, your business, your strategy, your future – do the best you can with the resources you have. *This approach transfers to any business decision, and there’s no reason why IP should be different – whether it is protecting IP, to surveillance or enforcement, it has to fit the business.

IP Strategy is entirely based on your particular context. The fact that a competitor or another company did a particular thing is irrelevant to whether you should do it. (Though a competitor’s actions are always important to understand, it doesn’t mean you should copy them.) Once you deeply understand your business strategy, your IP Strategy will follow.

Find an advisor who will work with you and educate you along the way. One that is confident enough to let you do as much of the work (and learning) as possible and to shape your intellectual property and your strategy to fit your business. It turns out that this approach allows small companies to spend a lot less, learn a lot more, become a lot more independent and sophisticated as they work with the advisor into the future.

This is the only way that I have found that I can work with small companies.

Unfortunately, due to other commitments, I can only assist a few small companies at a time in this way, but it has been incredibly rewarding in every single instance.

How do you protect your IP Processes? More importantly, have you ever done a freedom to operate clearance on them?

To kick off this short series of posts, here are a few insights on some of the top ‘patent process’ patent filers, what they are covering, and the most cited patents.

Given my 100 per cent client focus, I couldn’t really do this topic justice but I look forward to further insights from those with more time.

Patents

Top 10 assignees of patents covering patenting processes.

Were you aware of all of these companies and their patenting activities?

How confident are you that your own patent processes do not infringe any of these patents?

Top 10 patents by number of forward citations.

Here is claim 1 of the most cited patent covering patent processes:

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“1. A computer-automated method for rating or ranking patents or other intangible assets comprising:
selecting a first population of patents having a first quality or characteristic;
selecting a second population of patents having a second quality or characteristic that is different from or assumed to be different from said first quality or characteristic;
providing a computer-accessible database of selected patent metrics representative of or describing particular corresponding characteristics of each said patents in said first and second patent populations;
constructing a computer regression model based on said selected patent metrics, said regression model being operable to input said selected patent metrics for each said patent in said first and second patent populations and to output a corresponding rating or ranking that is generally predictive of the presence or absence of said first and/or second quality in said first and second patent populations according to a determined statistical accuracy;
and using said regression model to rate or rank one or more patents in a third patent population by inputting into said regression model selected patent metrics representative of or describing corresponding characteristics of said one or more patents in said third population to be rated or ranked and causing said regression model to output a corresponding rating or ranking based thereon.”

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The more sophisticated a company becomes with its patent analytics, the more patents it will have to dodge, and file. How are you placed in this landscape?

Obviously if you’re not in the business of inventing new patent processes and analytics, then there’s always the option of in-licensing them and there are plenty of great tools out there already. Just check that the indemnity for patent infringement for using the tool is going the right way.

Top 5 IPCs

These are only the top 5 of about 100 IPCs represented in this dataset which is surprisingly large. It’s also interesting to note that the top IPC is 6 times more popular than the fifth most used IPC.

*Notes:

Data is from 1969 through to 31 December 2015.

Due to the quick data grab, the data is a little ‘dirty’ so I can’t give you certain insights, such as filing intensity over time. However, I have cleaned out irrelevant records in the data presented here.

Thanks to Taylor Wessing’s brand new Patent Map, anyone can now quickly compare European jurisdictions on key litigation factors.

Those who have litigated in Europe will know that this comparison is at the heart of every strategic litigation campaign, whether seeking to launch a new product (and avoid injunctions) or attempting to stop competitors.

Key questions such as: “Which countries should go first and why, and what’s likely to happen and how long will it take?” are all readily addressed with the new tool.

As I’ve said before, understanding the terrain that you’re operating in is critical to a successful IP Strategy. Well, in Europe at least, taking that step has just become a whole lot more accessible.

It’s been a great honour to be a member of the IAM Strategy 300. I was there in the first group (the IAM250) in 2009, and have been there every year since. (Thank you so much for the previous nominations and votes of confidence.)

I think the IAM300 is a great way to let the world know about those at the top of the IP Strategy game and I’m absolutely delighted that this year’s selection will finally include people in in-house roles too. Congratulations to Joff, SJ, Gavin and the team for a wonderful job.

As for me, my practice has changed, I no longer have 22 people in however-many countries around the globe. It’s just me and my fantastic support team. Apart from a handful of smaller clients that I can’t resist, I tend to spend more time working further up the chain, and more in the background these days, and I don’t have time for all of the marketing / business development we used to do.

There are many ‘up and coming’ IP Strategists who would cherish membership in the group and so it’s time to make room for them.

Best of luck to all of the nominees (and yes this blog will continue as and when I get time).

Strategy without analysis is like turning up to play a sporting match when you don’t know what sport you’re playing, what equipment to bring, the rules, who your opponent is or indeed where to show up for the game.

It’s not uncommon for far reaching errors to be made due to a simple lack of analysis. The people involved may know what to do but never get that far because they didn’t pause and think.

Sun Tzu advocated analyzing oneself and the enemy according to a suite of weighted factors to come up with a score.

You obviously need good information in order to conduct good analysis. What should you analyse? Start with the goal you have in mind – make it as specific as you can.

Then ask lots of questions. Surprisingly, the ability to ask good questions is more important than having ready made answers.

I use a toolkit of question prompts I have developed over the past twenty years as a way to pose questions from different perspectives. Our IP Playbook has been used in the same way.

Provided that you act on it in a timely and appropriate manner, you can never have too much analysis.

I use checklists of information sources tuned to different kinds of issues – some are free, some paid and some are highly specialised, bespoke services.

A key point in all if this to get as much first hand information as possible. I was once in a natural disaster situation and we spent a lot of time trying to get accurate information. We checked websites and called official departments. The best information, of course was from the local officials manning road blocks. Once we managed to speak to them, we knew exactly where we stood.

Do you remember the first time you played Chess against a much better player? The insights the other person had, seemed like magic. How did they know all of your possible moves and how were they prepared for all of them? They just had more and better information than you – in this instance garnered from years of playing the game.

Information is magic – use it wisely and you will be even more successful.

There’s a lot of lip service given these days to ‘aligning IP with business goals’. Most times there’s no indication at all about how to do that or any of the practicalities.

One practical matter that comes up time and again is around the goals themselves. Specific goals allow more room for compromise or pivots in the approach used to obtain what really matters.

Putting it another way, an indirect strategy is often the best – picture Alexander the Great at the siege of Tyre – he built a one km long causeway to turn a naval battle (which he would lose) into a land battle (which he won, emphatically). The more specific your goal the more room to use indirect means to achieve it.

Consider the following goal: to lead our market segment in sales of our latest innovation.

Compare this to the goal of maximizing business unit profit by the most effective means.

Say there’s a competitor who launches a product which infringes one of your patents in one of your key markets.

To maximise the number of units sold by you then you probably want an injunction stopping the competitor from selling.

However if it’s business unit profit that is the goal then a license may be much better. You may in fact find that a cross license with access to another technology or market creates even more business unit profit.

Careful where you aim because you may not actually want to be there at all.

It’s partly inspired by the 10th century Chinese text ‘One Hundred Unorthodox Strategies’ (which in turn incorporates many principles from the Seven Military Classics including the well known Art of War by Sun Tzu).

As with the popular ‘5o IP Strategy Mistakes‘ series, I’m very keen for readers to see your feedback and comments and suggestions for further tips (whether inspired by these or otherwise).

Each time I publish another post in this series I will add it to this page, so that you have them all in one place.